Marc Pernick’s legal practice focuses on complex commercial litigation, with particular expertise in intellectual property litigation.  He has over 25 years of experience working on technology and commercial matters. 

Marc’s experience spans a broad spectrum of technologies and industries.  He has represented clients in patent litigation concerning smart-phones and tablet computers, computer graphic chips, semiconductors, DVRs, e-commerce, document fraud detection, wireless communication, transit system technology, ultrasound contrast agents, DNA microarrays, and water filtration.

Marc’s expertise extends beyond patent litigation.  He has successfully represented clients in several commercial cases as well as trade secret, trademark, trade dress, patent licensing, and copyright disputes.  He has also developed winning strategies for proceedings in the PTO.

Marc has led teams in federal courts throughout the United States such as the Northern District of California, the Central District of California, the Eastern District of Texas, and the District of Delaware, and in the Superior Courts of San Mateo and Santa Clara.  He has achieved success for his clients in all phases of litigation, including trial, pre- and post-trial motions, summary judgment motions and arguments, Markman briefing and hearings, technology tutorials, expert reports and depositions, pre-suit analysis, depositions and discovery strategy, and mediation and settlement.  Marc has also argued before the Federal Circuit.

Some of Marc’s recent victories include:  

  • Part of trial team in high profile patent litigation regarding smart-phones and tablets where jury awarded client over $1 billion in damages (N.D. Cal. 2012);
  • Part of team that secured summary judgment of non-infringement on eve of trial for major international semiconductor manufacturer’s online circuit design tool (E.D. Tex. 2011); and
  • Co-lead trial counsel for leading Japanese technology company in trade secret case involving document authentication technology (San Mateo Superior Court 2010).  Plaintiff sought $2.3 billion in trial, but Judge awarded only $1 million in damages.   

Aside from his work representing clients in court, Marc is also a frequent writer and speaker on patent litigation topics, including patentability for business methods, claim construction, infringement, damages, inequitable conduct, attorneys’ fees, and demand letters. 

Before joining Mauriel Kapouytian Woods, Marc spent 20 years at the international law firm Morrison & Foerster.  As a Litigation Partner there, he worked on high-stakes intellectual property cases for Fortune 500 companies, universities, and start-ups.  Marc took a temporary break in 2013 to travel throughout Italy and Europe, with a home base in Rome.


  • NYU School of Law (J.D., 1992)
  • Cooper Union School of Engineering (B.S.E., 1989; Graduated No. 1 in Program; Concentrations in Computer Engineering and Mathematics)

Bar Memberships

  • Admitted in California

Selected Publications

  • Now That the Supreme Court Has Spoken, Has the Momentum Swung in Favor of Eligibility? (BNA’s Patent, Trademark & Copyright Journal, March 4, 2011)
  • A Closer Look At Supreme Court Arguments In Bilski (Law 360, January 6, 2010)
  • Phillips‘: Resolving (Most) Issues on Construing Patent Claims (New York Law Journal, July 28, 2005)
  • The Federal Circuit’s En Banc Consideration of Claim Construction In Phillips v. AWH Corp (ALM Patent Strategy & Management, March 1, 2005)

Speaking Engagements

  • Panelist at SFIPLA’s webinar “Alice Corp v. CLS Bank: Impact and Strategies in Prosecution and Litigation” (August 13, 2014)
  • Panelist at PLI’s “What Hath Bilski Wrought? Fallout in the Courts and the PTO” (March 21, 2011)
  • Panelist at Stanford Law Review Symposium, “The Future of Patents – Software and Business Method Patents” (Jan. 29, 2011)